What is the role of working examples in determining enablement for chemical compounds?

Working examples play a crucial role in determining enablement for chemical compounds, especially in unpredictable arts. The MPEP 2121.02 provides guidance on this matter: “In chemical arts, the disclosure of a single species usually does not provide an adequate basis to support generic claims.“ Working examples serve several important functions: Demonstrating the actual synthesis and…

Read More

How does the USPTO define ‘composition of matter’ for patent eligibility?

How does the USPTO define ‘composition of matter’ for patent eligibility? The USPTO defines ‘composition of matter’ as one of the four categories of patent-eligible subject matter under 35 U.S.C. § 101. According to the MPEP 2106.03: “Compositions of matter” are chemical compounds, mechanical mixtures, gases, and other materials. This category encompasses: Chemical compounds (e.g.,…

Read More

Can a chemical compound be claimed by its characteristics instead of its structure?

Yes, chemical compounds can be claimed by their characteristics when the structure is unknown. The MPEP 2173.05(t) provides this option: “A compound of unknown structure may be claimed by a combination of physical and chemical characteristics.” This approach is supported by legal precedent, such as Ex parte Brian. When structural information is unavailable or incomplete,…

Read More

What is the significance of “analogous art” in determining enablement for chemical compounds?

“Analogous art” plays a crucial role in determining enablement for chemical compounds, especially when considering the knowledge of a person of ordinary skill in the art. The MPEP 2121.02 states: “The level of disclosure required within a reference to make it an “enabling disclosure” is a function of the nature of the art.“ In chemical…

Read More

What are alternative ways to claim chemical compounds in patents?

Chemical compounds can be claimed in patents through various methods beyond structural formulas. The MPEP 2173.05(t) outlines several alternative approaches: Name-based claims: “Chemical compounds may be claimed by a name that adequately describes the material to one skilled in the art.” Characteristic-based claims: “A compound of unknown structure may be claimed by a combination of…

Read More

How does the Markush practice relate to unity of invention?

The Markush practice, which involves claiming a group of alternative chemical compounds, is subject to unity of invention requirements in PCT applications. According to MPEP 1850, for Markush groups: Unity of invention is considered to be present when the alternatives are of a similar nature. When the Markush grouping is for alternatives of chemical compounds,…

Read More

How does the USPTO handle allegations of unexpected results for chemical compounds?

How does the USPTO handle allegations of unexpected results for chemical compounds? The USPTO has specific guidelines for evaluating allegations of unexpected results, particularly for chemical compounds. According to MPEP 716.02(a)(II): “Evidence that a compound possesses unexpected properties is not sufficient to rebut a prima facie case of obviousness if the prior art suggested that…

Read More